| To: | Mastermind Inc. (trademarks@webblaw.com) |
| Subject: | U.S. Trademark Application Serial No. 90575354 - DISCO - 5728-2101527 |
| Sent: | October 18, 2021 10:36:05 AM |
| Sent As: | ecom110@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90575354
Mark: DISCO
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Correspondence Address: JOHN W. MCILVAINE, REGISTRATION NO. 34,2 |
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Applicant: Mastermind Inc.
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Reference/Docket No. 5728-2101527
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: October 18, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
LIKELIHOOD OF CONFUSION UNDER TRADEMARK ACT SECTION 2(d)
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 4197744, 4352895, 5146843 and 6451373. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
The examining attorney encloses information regarding pending application Serial Nos. 88837847 and 90446782. 37 C.F.R. Section 2.83. There may be a likelihood of confusion under Section 2(d) of the Trademark Act between the applicant’s mark and the marks in these earlier filed applications. If the earlier-filed applications mature into registration, the examining attorney may refuse registration under Section 2(d).
Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. The marks are compared for similarities in their appearance, sound, connotation and commercial impression. TMEP §§1207.01, 1207.01(b). The services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
After examining the marks, the examining attorney applies the second step of the test, whether there is a likelihood of confusion on the basis of the services identified in the application and registration. If the cited registration describes the services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. In re Elbaum, 211 USPQ 639 (TTAB 1981).
Applicant seeks to register the mark “DISCO.” Registration Nos. 4197744, 4352895, 5146843 and 6451373 are for the marks “DISCO TEST” and design, “DISCO,” “DISCO TWINS” and “DISCOPOETRY” and design. Earlier application Serial No. 88837847 is for the mark “EXPODISCO” and Serial No. 90446782 is for “DISCO AMIGOS.” Applicant’s mark is similar with regard to appearance, sound, meaning and commercial impression to the mark of cited registrant. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark. In the present case, the marks are identical in part. Because the applicant’s mark uses the same primary term DISCO as the already registered marks, thus the marks convey the same overall commercial impression. See: In re Akzona Inc., 94 (TTAB 1983); In re Wm. E. Wright Co., 185 USPQ 445 (TTAB 1975).
Applicant’s services are described as “Providing online educational courses; event planning; organizing and providing online educational events; educational services, namely, providing on-line information in the field of education; Non-downloadable software for online course creation of online virtual live educational courses with video conferencing capabilities; Software as a service (SaaS) provider in the field of online educational course designing; Software as a service (SaaS) provider in the field of virtual events hosting; Software as a service (SaaS) provider for third parties to design online educational courses; Software as a service (SaaS) provider for third parties to host virtual events; Software as a service (SAAS) services featuring software for education.” Registration No. 4197744 is for “Analyzing educational tests scores and data for others; Children's educational services, namely, providing academic performance evaluation, guidance and monitoring for children pre-kindergarten through grade 12 via the Internet; Educational examination services; Educational services, namely, developing curriculum for educators; Educational testing services; Preparing, administering, and scoring standardized tests; Providing educational assessment services; Providing information relating to educational services; Research in the field of education via the internet; Standardized testing.” Registration No. 4352895 is for “On-line journals, namely, blogs featuring information in the fields of internet competition, internet privacy, intellectual property rights, innovation and the free flow of information; Providing a website featuring blogs and non-downloadable publications in the nature of articles in the fields of internet competition, internet privacy, intellectual property rights, innovation and the free flow of information; Providing online newsletters in the field of internet competition, internet privacy, intellectual property rights, innovation and the free flow of information via e-mail; Conducting workshops and seminars in the field of internet competition, internet privacy, intellectual property rights, innovation and the free flow of information.” Registration No. 5146843 is for “Arranging and conducting nightclub entertainment events; Arranging for ticket reservations for shows and other entertainment events; Arranging, organizing, conducting, and hosting social entertainment events; Booking of entertainment halls; Booking of seats for shows and booking of theatre tickets; Conducting entertainment exhibitions in the nature of Disc Jockey contests; Disc jockeys for parties and special events; Educational and entertainment services for children, namely, providing interactive play areas, instructional classes in the field of learning how to be a Disc Jockey and social gatherings for children; Educational and entertainment services, namely, a continuing program about Disc Jockey personalities accessible by radio, television, satellite, audio, video and computer networks; Educational and entertainment services, namely, providing motivational and educational speakers; Educational services, namely, conducting workshops in the field of black music; Entertainment in the nature of dance performances; Entertainment in the nature of fashion shows; Entertainment in the nature of live performances by Disc Jockey personalities; Entertainment in the nature of live radio personality performances; Entertainment in the nature of live stage performances in the nature of Disc Jockey contests or lecture for hire in the field of performing as a Disc Jockey by an individual; Entertainment in the nature of on-going television programs in the field of Disc Jockey performers; Entertainment in the nature of television news shows; Entertainment in the nature of theater productions; Entertainment in the nature of visual and audio performances, and musical, variety, news and comedy shows; Entertainment in the nature of Disc Jockeys for parties and special events; Entertainment information; Entertainment information services, namely, providing information and news releases about a musical artist; Entertainment media production services for motion pictures, television and Internet; Entertainment services in the nature of an on-going reality based television program; Entertainment services in the nature of live musical performances; Entertainment services in the nature of recording, production and post-production services in the fields of music; Entertainment services, namely, an on-going series featuring Disc Jockey personalities provided through the Internet and television; Entertainment services, namely, an on-line activity where you create your own music videos; Entertainment services, namely, arranging and conducting of competitions for Disc Jockey personalities; Entertainment services, namely, cabarets; Entertainment services, namely, conducting parties; Entertainment services, namely, dance events by a recording artist; Entertainment services, namely, providing non-downloadable prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; Entertainment, namely, a continuing reality show featuring Disc Jockey personalities broadcast over television, satellite, audio, and video media; Entertainment, namely, a continuing reality show featuring Disc Jockey personalities broadcast over the Internet and television; Entertainment, namely, live music concerts; Entertainment, namely, live performances by a musical band; Entertainment, namely, live performances by musical bands; Entertainment, namely, television news shows; Information relating to entertainment and education, provided on-line from a computer database or the internet; Master of ceremony services for parties and special events; Media production location scouting services for entertainment purposes; Multimedia entertainment services in the nature of development, production and post-production services in the fields of video and films; Multimedia entertainment services in the nature of recording, production and post-production services in the fields of music, video, and films; Multimedia publishing of books, magazines, journals, software, games, music, and electronic publications; Music production services; Music publishing services; Music video production; Music-halls; Organizing and arranging exhibitions for entertainment purposes; Organizing live exhibitions and conferences in the fields of education, culture, and entertainment for non-business and non-commercial purposes; Party planning; Party planning consultation; Presentation of live show performances; Presentation of musical performance; Production and distribution of television shows and movies; Production of musical sound recording; Production of sound and music video recordings; Providing a website featuring information in the field of music and entertainment; Providing an Internet website portal featuring links to musical artist websites and music performance ticket information; Providing children's party centers for the purpose of entertaining children and celebrating birthdays; Providing facilities for movies, shows, plays, music or educational training; Providing information in the field of wedding party planning; Providing information on-line relating to virtual vehicle customization for hobby or entertainment purposes; Providing information regarding wedding planning for wedding parties; Providing information, news and commentary in the field of entertainment; Provision of information relating to live performances, road shows, live stage events, theatrical performances, live music concerts and audience participation in such events; Rental of portable stages; Rental of stage and movie equipment, namely, camera equipment, lighting equipment and grip equipment; Rental of stage scenery; Rental of textile tapestries and ornamental wall hangings for use as stage and screen curtains in theaters and performance halls; Social club services, namely, arranging, organizing, and hosting social events, get-togethers, and parties for club members; Special event, party and wedding planning consultation services; Theatrical and musical floor shows provided at discotheques and nightclubs; Theatrical and musical floor shows provided at performance venues; Ticket agency services for entertainment events; Ticket reservation and booking services for entertainment, and cultural events; all the foregoing not relating to sports or a sports team, league, mascot or stadium.” Registration No. 6451373 is for “Education and entertainment services, namely, ongoing television public service announcements and ongoing television programs in the field of spoken word music; Educational and entertainment services, namely, a continuing program about arts and culture accessible by means of any digital and physical platform; Educational and entertainment services, namely, providing motivational and educational speakers; Educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; Educational and entertainment services, namely, providing motivational speaking services in the field of arts and culture; Entertainment and education services in the nature of a series of short shows featuring poetry and music performances distributed to mobile handsets, which may include video, text, photos, illustrations or hypertext; Entertainment and educational services, namely, the presentation of seminars, lectures, workshops and panel discussions, and ongoing television and radio talk shows all in the field of public interest concerning arts and culture; Entertainment and educational services, namely, the presentation of seminars, workshops and panel discussions, and ongoing television and radio shows all in the field of arts and culture; Entertainment event booking agencies; Entertainment in the nature of fashion shows; Entertainment in the nature of live performances by poets, musicians and storytellers; Entertainment in the nature of theater productions; Entertainment information; Entertainment services in the nature of arranging social entertainment events; Entertainment services in the nature of hosting social entertainment events; Entertainment services in the nature of organizing social entertainment events; Entertainment services, namely, storytelling; Entertainment, namely, live music concerts; Entertainment, namely, live performances by musical bands; Production of audio recording; Production of films; Production of music; Production of podcasts; Production of radio programs; Production of sound and image recordings on sound and image carriers; Booking of entertainment halls; Entertainment media production services for the internet; Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings; Entertainment services in the nature of development, creation, production and post-production services of multimedia entertainment content; Entertainment services in the nature of development, creation, production, distribution, and post-production of multimedia entertainment content; Entertainment services, namely, multimedia production services; Film production; Film and video production; Media production services, namely, video and film production; Multimedia entertainment services in the nature of development, production and post-production services in the fields of video and films; Music production services; Organization of exhibitions for musical entertainment; Organization of fashion shows for entertainment purposes; Organizing and arranging exhibitions for entertainment purposes; Organizing exhibitions for live entertainment and displays of creative expression across genre and through available multimedia platforms; Providing entertainment information via a website; Providing a website featuring entertainment information; Providing advice and information in the field of educational and entertainment activities and events for children; Providing an in-person community forum in the field of arts and culture; Providing information in the field of entertainment; Providing voice overs for tapes, records and other recorded media for entertainment and education purposes; Provision of information relating to live entertainment; Record production.” Application Serial No. 88837847 is for “Providing on-line non-downloadable directory publications in the field of educational and entertainment events, educational speaker profiles, educational and entertainment event profiles, company profiles, educational and entertainment event vendors, and a calendar of educational and entertainment events; Providing a website featuring information in the field of educational and entertainment events, motivational and educational speakers, and a calendar of events of educational and entertainment events; Software as a service services featuring a software platform for event management, in particular, event marketing, managing event attendance, scheduling meetings, sending calendar invites, and obtaining vendors for events.” Earlier application Serial No. 90446782 is for “Dance events; Education services, namely, providing classes and instruction in the field of dance; Entertainment in the nature of dance performances; Organization of dancing events; Organizing events in the field of dance for cultural or educational purposes.” The services of applicant are closely related and identical to the services of registrants and earlier applicant. The applicant’s, earlier applicants’ and registrants’ services are likely to be encountered by the same purchasers in the same channel of trade.
The services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984). Given the confusing similarity of the marks, consumers familiar with the registrants’ services and earlier applicants’ services are likely to believe that applicant’s services come from the same source.
Because the applicant’s mark uses the same primary term DISCO as the already registered marks, and the services of applicant are closely related and identical to the services of registrants, there is a likelihood of confusion under Trademark Act Section 2(d). Based on the above reasons, a likelihood of confusion must be found to exist.
IDENTIFICATION/CLASSIFICATION OF SERVICES INDEFINITE
1. Providing online educational courses in the field of [indicate subject]; event planning for social entertainment purposes; organizing and providing online educational events; educational services, namely, providing on-line information in the field of education. (Class 41)
2. Providing temporary use of non-downloadable software for online course creation of online virtual live educational courses with video conferencing capabilities; Software as a service (SaaS) provider for [indicate function, e.g., providing a database] in the field of online educational course designing; Software as a service (SaaS) provider for [indicate function, e.g., streaming] in the field of virtual events hosting; Software as a service (SaaS) provider for third parties to design online educational courses; Software as a service (SaaS) provider for third parties to host virtual events; Software as a service (SAAS) services featuring software for educational purposes, namely for [indicate function, e.g., streaming classes]. (Class 42)
An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
ADDITION OF CLASSES TO THE APPLICATION
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
How to respond. Click to file a response to this nonfinal Office action.
/Caroline E. Wood/
Trademark Examining Attorney
caroline.wood@uspto.gov
Law Office 110
(571) 272-9243
RESPONSE GUIDANCE
